TECHNOLOGY

TECHNOLOGY; In Fights Over .Com Names, Trademark Owners Find a Way to Expand Their Domains

By SUSAN STELLIN

Published: June 24, 2002

Researchers analyzing an arbitration system set up to resolve disputes over Internet addresses have found that decisions made through the system have substantially broadened the rights of trademark holders in cyberspace.

The study represents one of the first attempts to examine the circumstances and outcome of more than 3,800 disputes handled by online arbitration procedures established in 1999 by the private corporation that manages the Internet's address system.

The goal of the arbitration system, known as the Uniform Domain Name Dispute Resolution Policy, was to provide an efficient, low-cost alternative to litigation for trademark holders who were trying to obtain the .com equivalent of their trademarks -- in many cases, from speculators hoping to sell those names at a profit to deep-pocketed corporations.

Although the researchers concluded that the system had been effective in combating these so-called abusive domain-name registrations, they also found that the system had ''tipped the scales too far'' in favor of trademark interests.

Milton Mueller, an associate professor at Syracuse University who conducted the study, said that in about 80 percent of the disputes examined, the party that filed the complaint, generally a trademark holder, prevailed. In more than half the cases, the party asked to defend a domain name registration did not bother to respond to the complaint and therefore lost the right to the name.

''That raises procedural and equity questions about the process,'' he said. ''If lots of domain holders feel intimidated or feel it's too expensive to respond, the whole process becomes simply a way for trademark holders to grab domain names.''

Although anyone who registers an Internet address must agree to submit to mandatory arbitration if a trademark holder files a complaint claiming its right to the domain, most domain-name holders are unaware of the details of this procedure. For roughly $1,500 to $3,000, a trademark holder can file a complaint to a dispute-resolution provider approved by the organization that manages the address system, the Internet Corporation for Assigned Names and Numbers.

Upon notice of a complaint, the defendant must submit documentation demonstrating legitimate use of the name.

Conversely, the party that filed the complaint must prove three factors: that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; that the defendant has no rights or legitimate interest in the name; and that the name has been registered and is being used in bad faith.

The cases are heard by a panelist, often a trademark lawyer, who is appointed by the chosen dispute-resolution provider. One of those providers is the World Intellectual Property Organization, which played a significant role drafting the arbitration procedures. (Defendants can elect to pay a fee of $1,500 or more to have their case heard by three panelists, instead of one.)

Dr. Mueller, who has served on the name-dispute panel, said that in studying thousands of cases several disturbing patterns emerged. For instance, ''The notion of 'confusing similarity' has been expanded to the point where any character string that incorporates the trademark is considered to be confusingly similar,'' he said, citing as an example Hewlett-Packard complaints based on defendants' using the initials H.P. in their Internet addresses.

At the same time, researchers found the arbitration system has narrowed the definition of what qualifies as legitimate or noncommercial use of a trademark. ''We've discovered about 80 cases in which the registrant of the name is trying to make a statement about something -- not always in a critical way, it might be a fan site, or a site that provides news or information,'' Dr. Mueller said.

''The panelists are giving some very strange rationalizations for taking those names away with alarming frequency.'' (In cases where the defendant was criticizing or providing commentary about a trademark holder, researchers found, the defendant won less than a third of the time.)

Gorstew and Unique Vacations, owners of the Sandals and Beaches resorts, are among the top filers of complaints. The two, which own sandals.com and many other addresses, have filed at least 23 domain name challenges, in many cases against companies that sell Sandals vacations, recovering names like sandalstravel.com and sandalsvacation.com.

Concern about the impact of the dispute-resolution system on free speech was one of the factors that led the Markle Foundation, a philanthropy focused on emerging technology, to provide a grant to support Dr. Mueller's research. Markle also gave a grant to support the development of a public database containing details about the first 3,845 cases submitted for arbitration. The two grants totaled $160,000.

''This is supposed to be a high-tech dispute-resolution system, but the manner of making the decisions of arbitrators available is as low-tech as one can be in this age,'' said Ethan Katsch, director of the Center for Information Technology and Dispute Resolution at the University of Massachusetts, who developed the database. He said it would be available by the end of the summer at the Web site of the Cornell Legal Information Institute (www.law.cornell.edu).

Dr. Mueller said that he hoped the database addressed another problem the study found: that arbitrators issued inconsistent decisions in similar complaints.

''I think the danger is to assume that these sort of crude standards that we've been using for the past two years are appropriate going forward,'' Dr. Mueller said, noting that despite its faults, the arbitration system is often cited as a model for resolving global disputes involving e-commerce.

''It was set up, is administered and is pretty much run by trademark lawyers,'' he said. ''But it is kind of evolving into a system of global common law.''

Photo: Sandals Resorts often challenges Internet domain names similar to its own.